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Rights and protection
Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
The exclusive right to a mark can be acquired through a registration obtained under the IP Act 36/2003. According to Section 102(2) therein, registration of a mark may be granted to the party that fulfils the conditions of a valid application first or validly claims the earliest priority for its application. However, under Section 104(1)(c), the registrar will not register:
- a mark that is likely to mislead the public; or
- an unregistered mark used earlier in Sri Lanka by a third party in connection with, or identical to, similar goods or services if the applicant was aware or could not have been unaware of such use.
What legal protections are available to unregistered trademarks?
Unregistered marks can be protected by the Unfair Competition Law or a common law action for passing off.
How are rights in unregistered marks established?
Unregistered marks can be protected under the Unfair Competition Law or a common law action for passing off.
Are any special rights and protections afforded to owners of well-known and famous marks?
Yes, Section 104(1)(d) of the IP Act prohibits the registration of marks that are identical or similar to well-known marks and trade names. Marks will not be registered if they are identical or sufficiently similar to, or constitute a translation, transliteration or transcription of, third-party marks for identical or similar goods or services. In this instance, it is immaterial whether the well-known mark is registered in Sri Lanka.
To what extent are foreign trademark registrations recognised in your jurisdiction?
Sri Lanka is a party to the Paris Convention for the Protection of Industrial Property and must grant the same rights to nationals of other contracting states as it grants to its own nationals. Therefore, an applicant that has submitted a trademark application in a contracting state may claim priority on the basis of that application when filing an application for the registration of the same mark in Sri Lanka within six months from the date of the priority application.
What legal rights and protections are accorded to registered trademarks?
The registered owner of a mark has the right to:
- use the mark;
- assign or transmit the registration of the mark; and
- conclude licensing contracts.
Who may register trademarks?
Any party, whether a company, partnership, association or agent authorised by the applicant, can register a trademark.
What marks are registrable (including any non-traditional marks)?
As per Section 102(3) of the IP Act, marks may comprise:
- arbitrary or fanciful designations;
- geographical names;
- borders and edgings;
- combinations or arrangements of colours; or
- shapes of goods or containers.
Can a mark acquire distinctiveness through use?
Yes, a mark may acquire distinctiveness through use in Sri Lanka.
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
As per Section 103(1) of the IP Act, a mark will not be registered if it:
- consists of shapes or forms imposed by the inherent nature of the goods or services or their industrial function;
- consists exclusively of a sign or indication which may serve, in the course of trade, to designate the type, quality, quantity, intended purpose, value, place of origin or time of production or supply of the goods or services concerned;
- consists exclusively of a sign or indication which has become, in the language or bona fide and established trade practice in Sri Lanka, a customary designation of the goods or services concerned;
- is incapable of distinguishing the goods or services of one enterprise from those of another;
- consists of any scandalous design, is contrary to morality or public order or, in the opinion of the National Intellectual Property Office director general or any court to which the matter may be referred, is likely to offend the religious or racial susceptibilities of any community;
- is likely to mislead trade circles or the public as to the nature, source, geographical indication, manufacturing process, characteristics or suitability for the purpose of the goods or services concerned;
- does not represent in a special or particular manner the name of an individual or enterprise;
- is, according to its ordinary signification, a geographical name or surname;
- reproduces or imitates armorial bearings, flags or other emblems, initials, names or abbreviated names of any state, intergovernmental international organisation or organisation created by an international convention, unless authorised by the competent authority of that state or international organisation;
- reproduces or imitates official signs or hallmarks of a state, unless authorised by the competent authority of that state;
- resembles in such a way as to be likely to mislead the public a mark, collective mark or certification mark whose registration has expired and not been renewed during the two years preceding the filing of the application for the registration of the mark in question or where its renunciation, removal or nullity has been recorded in the register for two years preceding the filing of the application for the mark in question;
- has been applied for in relation to goods or services which are prohibited in Sri Lanka; or
- consists of a certain word or definition, as may be prescribed.
Are collective and certification marks registrable? If so, under what conditions?
Yes, collective and certification marks are registerable in Sri Lanka. A mark is registerable as a collective mark if the application is accompanied by a copy of the conditions governing the use of the mark duly certified by the applicant.
A mark is registerable as a certification mark if the application is:
- designated as a certification mark; and
- accompanied by a copy of the conditions governing the use of the mark duly certified by the applicant.
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